First, Brookfield was a case mostly about the use of "moviebuffs.com"
as a web address by the Defendant when the Plaintiff had registered
"MovieBuff" as a mark. The Defendant had used the tag line “The Movie
Buff's Movie Store” prior to Plaintiff's use of MovieBuff. The 9th
Circuit said that “The Movie Buff's Movie Store” and “moviebuff.com” are
very different, so the argument did not fly. This is a lesson in
building a family of marks, and another good story to follow. But, the
Plaintiff went on and complained about meta tags, which are now
irrelevant (live movie stores), but the case law lives on.

Brookfield reasoned that using another's mark in meta tags could result
in what is known as initial interest confusion. They reasoned that web
surfers looking for Brookfield's “MovieBuff” products who are taken by a
search engine to “westcoastvideo.com” will find a database similar
enough to “MovieBuff” so a sizeable number of consumers who were
originally looking for Brookfield's product will simply decide to
utilize West Coast's offerings instead.

The interesting thing about Brookfield is that it disclaimed source
confusion. They reasoned that consumers knew they were patronizing West
Coast rather than Brookfield, but there was nevertheless initial
interest confusion in the sense that, by using “moviebuff.com” or
“MovieBuff” to divert people looking for “MovieBuff” to its web site,
West Coast improperly benefitted from the goodwill that Brookfield
developed in its mark. The use of another's trademark in a manner
calculated “to capture initial consumer attention, even though no actual
sale is finally completed as a result of the confusion, may be still an
infringement.”

The Catch-22 here is that the use of
metatags may not cause consumer confusion if they are ineffective. In
the Ninth Circuit, a Court must do a complete analysis of the following
factors in order to make the determination of whether there is a
likelihood of consumer confusion (the Sleekcraft factors): The eight
factors we identified in Sleekcraft
were: “[1] strength of the mark; [2] proximity of the goods; [3]
similarity of the marks; [4] evidence of actual confusion; [5] marketing
channels used; [6] type of goods and the degree of care likely to be
exercised by the purchaser; [7] defendant's intent in selecting the
mark; and [8] likelihood of expansion of the product lines.”

Because this is a fact intensive analysis, a
court case can be expensive. If the use of metatags works, then it is
more likely that the defendant will be found to have caused consumer
confusion and be liable. Simply put, success in using metags is what
could create liability.

dennis l. hall

Dennis graduated from Indiana and Columbia (75,
77, and 79) in economics, and has taught at several colleges. With a
Minnesota law degree (87), Dennis likes all areas of the law that cross
with economics: antitrust, unfair competition, trade practices,
copyright, trademark, damages.